Google Fights Genericide Claim (and Wins)

Google’s famous trademark in its name has just survived a challenger’s attempt to have it declared generic. In Elliott v. Google, a federal court in Arizona held last week that despite the public’s use of the word “googling” to mean “searching on the Internet,” the “Google” word mark still functions in the minds of consumers primarily to identify Google, the Mountain View-based Internet company, as the source of the search service associated with the “Google” mark. The plaintiff in the case argued that the public’s use of a trademark as a verb necessarily signifies that the mark has become generic. The court disagreed:

Verb use of a trademark is not fundamentally incapable of identifying a producer or denoting source. A mark can be used as a verb in a discriminate sense so as to refer to an activity with a particular product or service, e.g., “I will PHOTOSHOP the image” could mean the act of manipulating an image by using the trademarked Photoshop graphics editing software developed and sold by Adobe Systems. This discriminate mark-as-verb usage clearly performs the statutory source-denoting function of a trademark.

The court went on to explain that a problem arises for a mark owner only if mark-as-verb usage is indiscriminate, and the mark becomes referentially unmoored in the public’s mind from the mark owner’s product or service.

Trademarks are classified in the law on a continuum of strength from fanciful to descriptive, with fanciful marks (like “Zynga”) being entitled to the strongest legal protection and descriptive marks (like “Fish-Fri”) entitled to the weakest. Generic marks merit no protection at all. The term “genericide” is used in trademark law to denote the passage of a trademark from its protected legal status as a unique source-identifier to a non-protected status as just another word in the language. Marks that are born fanciful can become generic over time if they are used often enough to describe the general category of product or service to which the mark owner’s product or service belongs, rather than the specific product or service offered by the mark owner. Examples of famous, and once strong, trademarks that have succumbed to genericide over the years include “zipper,” “escalator,” and “aspirin.” Xerox has been working hard to prevent its mark from becoming generic for many years, in part by politely asking the public in magazine ads not to use “xerox” to mean “make a photocopy.” Google’s Rules for Proper Usage of its trademarks include, among many others, the following requirements:

Use the trademark only as an adjective, never as a noun or verb, and never in the plural or possessive form.

Use a generic term following the trademark, for example: GOOGLE search engine, Google search, GOOGLE web search.

Don’t use Google trademarks in a way that suggests a common, descriptive, or generic meaning.

If the primary meaning of the word “Google” for the public becomes simply “to search the Internet” and not “to use the Google search engine to search the Internet,” Google will lose its property rights in the mark.

I was curious to see whether and how “Google” is defined in popular dictionaries, so I looked at the Merriam-Webster Collegiate Dictionary online, which says that small-g “google” means “to use the Google search engine to obtain information about (as a person) on the World Wide Web.” That definition is good news for Google. Dictionary.com has a fuller and, from Google’s perspective, more problematic entry:

Meaning #2 in the Dictionary.com definition should be a source of concern for Google’s trademark lawyers, because it reflects a trend toward widespread indiscriminate mark-as-verb usage. Meaning #3 also raises a red flag, insofar as it suggests that one might “google” something using a search engine other than Google’s. (If you, as I do, experience dissonance or confusion at the prospect of googling with Bing or Yahoo, then you and I and the Arizona court are all on the same page.) For as long as search-engine users mean “use Google to search” when they use “google” as a verb, the “Google” mark will retain its status as Google’s intellectual property. Google wants its name to be synonymous with search, but not in a way that undermines its trademark rights.

Comments

The outcome seems right, but I’m curious about Google’s usage rules, this one in particular: “Use the trademark only as an adjective, never as a noun or verb, and never in the plural or possessive form.” Is the first requirement Google’s way of saying the brand may only be used as a noun adjunct functioning as an adjective? That one must always specify Google [something: Analytics, Maps, etc.]? When using the Google trademark one must never say, e.g., “Google provides the following services […]”, because here it functions as a noun? Or here as a possessive: “The following services are Google’s […]”? Or, complying with the rule requiring a generic term following the mark, “Google’s search engine” or here, compounding two marks with a generic term, “Google’s AdSense™ advertising service”? In any event, we are well past the point where “google” causes dissonance for the ordinary user of language and web search tools. The need for legal protection is a reflection of the company’s concerns about this trend, not about misuse of the language.

Annemarie, one clarification to your statement above that “If the primary meaning of the word ‘Google’ for the public becomes simply ‘to search the Internet’ and not ‘to use the Google search engine to search the Internet,’ Google will lose its property rights in the mark”:

I read the court’s opinion to say — quite correctly, in my view — that the key question is whether “google” becomes the word for search engines generally; if it does, then “google” is generic. But even if consumers primarily use “google” in its verb form to mean “to search the Internet,” the term “Google” is not generic if it continues to identify a single source of search engine as a mark. As the court put it: “Thus, even if a mark qua verb is used exclusively in the indiscriminate sense, the mark is not generic if a majority of the consuming public nevertheless uses the mark qua mark to differentiate between one particular product or service from those offered by competitors.”

I’m not sure if you were saying something different above (or if you were characterizing Google’s view rather than the court’s), but I thought it worth a clarification.

Laura, I didn’t mean to say anything different, but to the extent that it sounded as if I did, thanks for the clarification. Much appreciated. I think the question of whether “Google” as a noun comes to mean search engines generally and whether “google” as a verb comes to mean simply “to search the Internet” and not “to search the Internet using Google’s search engine” are closely related questions. The key, of course, is whether “Google”/”google” loses its ability to identify a unique source of services in the minds of consumers. The court is clear that even indiscriminate mark-as-verb use is not necessarily damning, but I think the court does flag it as a potential problem–a step down the road of uncoupling the mark from its source.

I think that the court’s willingness to use “photoshop” as an example of how using a mark as a verb doesn’t make it generic is a sign of how far courts are willing to bend over backwards to preserve valuable marks. Because many of the people I know who use the verb have only the vaguest understanding that there’s a program by that name. (Xerox, on the other hand, has been pretty successful in getting people to use the term “photocopy”, perhaps because all their competitors would prefer not to be selling “xerox machines” against the real thing.)

Bayer officially lost the “aspirin” trademark as part of WW2 reparations (at least in the US, UK, France and Russia), so it is cheating to cite it as an unqualified example of “genericide” (even though subsequent to its generic use in those four countries, it was genericided in many other countries).

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